Court of Session proceeded in this case, be held binding on the House, all argument is at an end. It is singular that the Respondents in the appeal to this of the House of Lords for the year 1774. The arguments before the House have been sought for without success. 1842. BROWN v. ANNANDALE. 1774: May 27. Dr. JOHN ROEBUCK and SAMUEL GARBETT, Esq. - Appellants. ANDREW STIRLING & Son, Merchants in Glasgow - Respondents. IN June 1771, the Appellants obtained letters-patent under the Found a good great seal of Scotland, for the exclusive right of manufacturing oil objection to a of vitriol in vessels of lead, throughout Scotland, for 14 years. They Scotch patent had, for several years previously, carried on the same manufacture, to its being with as much secresy as they could, at Prestonpans, near Edinburgh. Soon after the date of the patent, the Respondents began art was to erect buildings at Glasgow, for carrying on the same process of known and manufacturing oil of vitriol; whereupon the Appellants applied to practised in the Court of Session for a bill of suspension and interdict, or injunc- England. tion, to restrain them. This bill was passed after various discussions not necessary to be here stated. In the course of those discussions, the Respondents raised the following objections to the patent : 1. That the invention claimed by the Appellants (the substitution of lead for glass vessels) was no new discovery, being only a slight variation in the method of conducting the manufacture. 2. That it could be no new discovery at the time of obtaining the patent, inasmuch as the Appellants had, for 20 years previously, carried on the manufacture in that method. 3. That at the time the patent was granted, this method of manufacturing oil or spirits of vitriol in vessels of lead, was known to and practised by various other people both in England and Scotland. These objections were met by counter averments by the Appellants, who, in answer to the third in particular, averred that prior to the date of their patent, the manufacture of oil or spirits of vitriol in vessels of lead, was not publicly practised by any person whatever either in England or Scotland. The Lord Justice-Clerk pronounced this interlocutor on the 10th of March 1773:-" Before answer, allows the chargers (the Respondents) to prove that the making the oil of vitriol from a mixture of sulphur and saltpetre, in vessels of lead, was at the time and before the date of the letters-patent in favour of the suspenders (the Appellants) known to and actually practised by others than the suspenders themselves: and allows the suspenders conjunct probation thereanent; and grants commission to take the proofs to be adduced by both parties, at Bewdly in Worcestershire, and at Battersea near London," &c. Several witnesses were examined under the commission in England: witnesses were also examined in Scotland. The proofs being concluded, the cause was argued on memo granted, the 1842. BROWN v. ANNANDALE. House, in that case, did not put their case on user in England: so little did they expect to succeed in this point that they scarcely mentioned it in their Roebuck rials (written pleadings). The arguments were substantially the same as the reasons hereinafter stated as annexed to the printed cases of the parties in their appeal to the House of Lords. V. Stirling. On the 4th of March 1774, the following interlocutor was pronounced by the Lords of Session (dissentientibus Lords Kaimes, Pitfour, and Monboddo):—“ On report of the Lord Justice-Clerk, and having advised the proof and memorials hinc inde; in respect it appears, from the proof adduced, that the art of making the oil of vitriol from a mixture of sulphur and saltpetre, in vessels of lead, was at the time and before the date of the letters-patent in favour of the suspenders (Appellants) known to and actually practised by different persons in England, therefore the Lords find the letters orderly proceeded (that is, dissolve the injunction), and decern." Six of the Lords of Session gave their reasons as follows:"Lord Hailes :--A very momentous question occurs here. Messrs. Roebuck & Co. contend that, although they were not the inventors of making oil of vitriol in lead vessels, still their patent must be good to exclude others, because they were the first to practise that art in Scotland. Your Lordships will not establish this proposition without maturely weighing its consequences, which seem exceedingly strange. I will explain what I mean by a few familiar examples. The first stocking-loom in Scotland was established in Glasgow between 30 and 40 years ago. According to Messrs. Roebuck & Co., the man who first established that stocking-loom might have obtained a patent, prohibiting all others in Scotland from establishing a stocking-loom in Scotland for 14 years: the same would be the case as to the still later establishment of looms for silk, gauze, and ribands. At this day the working of velvet, or of any other manufactures used in England, but not in Scotland, may be circumscribed by patent for 14 years; that is, all new manufactures may be limited in Scotland to one man for the space of 14 years. The only person in Scotland who has used Dr. Franklin's conductor for lightning, is Dr. Lind. According to the suspenders' argument, he, as the first user, though not the inventor, may have a patent; although lightning were as frequent and fatal in Scotland as in Virginia, no man could use the conductor without Dr. Lind's permission, not even Dr. Franklin himself. Again, there is in Edinburgh one Dallaway, who understands the method of enamelling on white iron, as practised in Birmingham. This art is not known in Scotland; it is a manufacture which would maintain thousands of hands; there can be no doubt of the publicus usus et exercitium of Dallaway, for I have seen his work; he may therefore obtain a valid patent tomorrow, and prevent the further introduction of the manufacture into Scotland for 14 years. Many more examples might be given ; but these may suffice to call your Lordships' attention to this ques reasons. The judgment of this House also affirmed the decree below, "for other reasons, as well as those specified in the interlocutor ". tion, Whether that proposition can be true in law, whereof the consequences are obviously ruinous to the whole system of improvements in Scotland? "Lord Gardenston:-Here is such an improvement as may be held an invention. There is nothing in the objection that Roebuck & Co. had privately carried on the trade for a number of years. The great difficulty is here, that the work in lead vessels had been carried on in England before the date of the patent. I should even doubt whether a patent might be granted to the person who first introduced any foreign invention into Britain. In matters of prerogative there is no distinction between England and Scotland. This distinction was taken away by the happy Union. "Lord Kaimes:-This is a matter of considerable moment, because it concerns the good of the public and manufactures. The suspenders take the benefit both of the act of James 1, and of the general prerogative of all princes touching patents to new inventions. The radical point is, whether Messrs. Roebuck & Co. have invented anything material? They certainly have. The use of lead vessels instead of glass is a matter of great moment. It has been said, that if the use of lead vessels was known in England before the date of the patent, Messrs. Roebuck & Co. cannot support their patent; and to illustrate this the use of the stocking-loom, &c. has been mentioned. I am not sure that the King could not have granted a patent to the person who introduced the stocking-loom into Scotland. The cases, however, are different, for the stocking-loom was a public manufactory in England, to which every one had access; whereas they who made oil of vitriol in lead vessels at Bridgenorth or Bewdly, wrought privately, and work privately still. "Lord Monboddo :-The invention of Messrs. Roebuck & Co. has proved useful. The first objection is, that there is no new discovery. Answer: Call it a discovery, or call it an improvement, it is so material as to entitle Messrs. Roebuck & Co. to a reward. The second objection is, That the patentees had used this method for 14 years before the date of the patent. Answer, 1st, In point of fact it is long since they began to try it; but they did not till of late bring their trials to perfection: 2d. There was no occasion for applying to obtain a patent till there was a danger of discovery. The third objection is, That the discovery was not made by Roebuck & Co. I do not see any evidence of the art having been practised in Scotland. That the art was practised in England before the date of the patent, I am satisfied. The question then comes to this, Will not Roebuck's patent be good, as he first brought the art into Scotland? Even in that view, as the introductor of this art, he is a great benefactor to the nation. The art was not publicly practised in England; its being secretly practised there will not affect Roebuck's patent. 1842. BROWN บ. ANNANDALE. Roebuck V. Stirling. 1842. BROWN v. ANNANDALE. Roebuck V. Stirling. The Lord Chancellor :-If we are to take that case according to the letter, it is a distinct decision on the very point. The second reason raised the question But I will suppose that the art was publicly practised in England; still I think it the same thing as if Roebuck had introduced it into Scotland from beyond seas. In the sense of law, England, with respect to us, is beyond seas. The Article of Union touches not this case. This is not a matter of trade, though it may be useful in trade. There is no communication of the law of patents between the two nations. "Lord Coalston:-I am clear that there is no relevancy on the first and second objections. My sole difficulty lies in the third objection, that this art had been practised in England and elsewhere before the date of the patent. There is no proof as to the Stirlings. It is not sufficient that others may have known it; if others did not use it, the patent will be good; so says the Act of King James 1, which the parties admit to be the law of Britain; but the evidence of its having been practised in England, is sufficient to void the patent. I admit that its being practised in foreign parts would not be a good objection. It is proved to have been practised at Bridgenorth and Bewdly this, I think, is a good objection in the words of the Articles of Union. Upon this clause of the Articles of Union, the statute of James 1 is admitted to be the law of Britain. At the time of the Union, there was scarcely one manufacture properly practised in Scotland. Most of the manufactures now known were then known in England. Was it agreeable to the statute of Monopolies, or to the Articles of Union, that any subject of Scotland could apply for a patent respecting any manufacture known in England, but not in Scotland? This cause falls to be determined upon the Articles of Union. "Lord Justice-Clerk :-I would repel the first and second objec tion; but the third is irresistible. As to what is said that this business is kept a secret, it is notoriously known that many of the most valuable manufactures in England, whether with patent or without, are conducted with all imaginable secresy. The words publicum exercitium, though in the patent, are not in the statute. I should be sorry that we adopted this rule of decision, holding that a patent would be good against establishing manufactures in Scotland which are practised in England: this destroys the evidence from the King's patent, that Roebuck was the original inventor. The law of monopolies is general, with the exception of the first inventor." Roebuck and Garbett appealed to the House of Lords against the interlocutor of the Court of Session, and also against several prior interlocutors of the Lord Ordinary. The reasons annexed to their printed case, and signed by E. Thurlow, Ja. Montgomery, and Al. Wedderburn, were to the following effect : 1. Every original discoverer of an invention, or an importer of a foreign invention useful to the public, may, as a reward of his labour, distinctly. It appears Lord Mansfield was present when the judgment was given. 1842. BROWN v. Roebuck V. Stirling. The Attorney-general:-To what extent, then, are ANNANDALE. obtain a patent for an exclusive privilege of exercising such invention during a reasonable time. The Appellants stand in that situation: by study, labour, and great expense, they discovered, and for many years practised in secret, a method of preparing and also of rectifying oil of vitriol in vessels of lead; which considerably reduced the price of that commodity. On finding themselves likely to be stript of the benefit of this discovery by repeated undue attempts made by others on their servants, to come at the secret, they applied for and obtained letters-patent; which, by the laws of both parts of the United Kingdom, entitle them to prevent any other person from exercising this invention during the term granted by the patent. Objection :-That the mode of preparing oil of vitriol practised by the Appellants, is not an original invention, but only an improvement on a manufacture formerly known. Answer:-The method discovered by the Appellants is, in the sound construction of the Act of 21 James 1, s. 6, a new invention, as the process and vessels used are different from any formerly prac tised; and as their method has had the effect of lowering the price of the manufacture, they are, within the reason of the law, justly entitled to the benefit of their patent. Objection:-That before the date of the patent, the same mode was practised by the Appellants themselves, and also known to and practised by the Respondents and others, both in England and Scotland. Answer:-For many years before the date of the patent, the Appellants practised their own invention; but they were long employed in bringing to perfection the discovery they had made, and carried on their business with all possible secresy, until they made a public disclosure of the invention upon their obtaining the patent, and till then it was not known or practised by others or elsewhere. 2. No proof has been brought by the Respondents, either of the discovery or practice, by any other than the Appellants, of this invention in Scotland (which alone can avail them); and with respect to the proof of the prior practice of the same mode in England, that proof, were it much stronger and more unexceptionable than it is, cannot serve the Respondents, because England in the present question is to be considered as a foreign country with respect to Scotland; and, in that view, the Appellants are entitled to the full benefit of the patent, even though they had not been the first discoverers, but only the first importers of the invention from England to Scotland. [The rest of this reason alleged that the Respondents' proofs were improperly taken in England; that the imperfect knowledge of the manufacture there was acquired from a discarded servant of the Appellants; that the manufacture was never publicly carried on at any of the oil of vitriol works in England; and that the rectifying the spirits in vessels of lead, which was a material part of the inven |